`Tel: 571-272-7822
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`Paper 68
`Entered: September 9, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YITA LLC,
`Petitioner,
`v.
`MACNEIL IP LLC,
`Patent Owner.
`
`IPR2020-01139 (Patent 8,382,186 B2)
` IPR2020-01142 (Patent 8,833,834 B2)1
`
`Before MITCHELL G. WEATHERLY, JAMES A. WORTH,
`MICHAEL L. WOODS, and ARTHUR M. PESLAK,
`Administrative Patent Judges.2
`
`WOODS, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be entered in each
`proceeding. The parties are not authorized to use this caption style.
`2 This listing of Administrative Patent Judges does not reflect an expanded
`panel. Rather, this Order addresses multiple proceedings that collectively
`involve more than three Administrative Patent Judges.
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`I. ORAL ARGUMENT
`Petitioner and Patent Owner both filed a timely request for a
`combined oral argument in these proceedings. Paper 66 (filed September 1,
`2021); Paper 67 (filed September 1, 2021); see also Paper 18, 10 (setting the
`due date for requesting oral argument as September 1, 2021).3 These
`requests are granted.
`
`A. Time and Format
`Oral argument will commence at 1:00 PM, Eastern Time, on October
`12, 2021, by video.4 The Board will provide a court reporter for the hearing,
`and the reporter’s transcript will constitute the official record of the hearing.
`Petitioner will have a total of 60 minutes for both cases to present
`argument and Patent Owner will have a total of 60 minutes for both cases to
`respond. Petitioner will open the hearing by presenting its case regarding
`the challenged claims for which the Board instituted trial. Thereafter, Patent
`Owner will respond to Petitioner’s argument. Petitioner may reserve
`rebuttal time to respond to arguments presented by Patent Owner. In
`accordance with the Consolidated Trial Practice Guide5 (“CTPG”), issued in
`November 2019, Patent Owner may request to reserve time for a brief sur-
`rebuttal. See CTPG 83.
`The parties may request a pre-hearing conference in advance of the
`hearing. See id. at 82. “The purpose of the pre-hearing conference is to
`
`
`3 Citations are to papers filed in IPR2020-01139. Similar papers were filed
`in IPR2020-01142.
`4 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the hearing, and to seek the Board’s guidance as to particular
`issues that the panel would like addressed by the parties.” Id. If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven (7) business days before the hearing date and
`filed no later than October 8, 2021.6
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`evidence. Rather, demonstratives are visual aids to a party’s oral
`presentation regarding arguments and evidence previously presented and
`discussed in the papers. Accordingly, demonstratives shall be clearly
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`regulations to dismiss untimely argument “raised for the first time during
`oral argument”). “[N]o new evidence may be presented at the oral
`argument.” CTPG 85; see also St. Jude Med., Cardiology Div., Inc. v. The
`Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB
`
`
`6 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request that the Board modify the schedule for filing
`and serving demonstratives at least seven (7) business days before the
`hearing date.
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`3
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`
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
`record but not previously discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the parties shall meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection (and should
`include a copy of the objected-to portions) and include a one (1) sentence
`statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider any objections, and may
`reserve ruling on the objections.7 Any objection to demonstratives that is
`not timely presented will be considered waived.
`
`
`7 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`4
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`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. See CTPG 11. Any counsel of record may present the
`party’s argument as long as that counsel is present by video.
`
`D. Video Hearing Details8
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) business days prior to the
`hearing date to receive video set-up information. As a reminder, all
`arrangements and the expenses involved with appearing by video, such as
`the selection of the facility from which a party will attend by video, must be
`borne by that party. If a video connection cannot be established, the parties
`will be provided with dial-in connection information, and the hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`
`
`8 USPTO facilities remain closed to the public. If and when conditions
`allow in-person hearing attendance, the parties will be notified and will be
`permitted to submit a joint request to convert the current video hearing to an
`in-person hearing. The requests will be considered on a case-by-case basis,
`and subject to resource availability.
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`5
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`
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`least five (5) business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.9
`
`E. Remote Attendance Requests
`Members of the public may request to listen to this hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board at PTABHearings@uspto.gov at least ten (10) business days prior to
`the hearing date.
`
`
`9 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
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`6
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`
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
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`F. Audio/Visual Equipment Requests
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video hearing, such as a request to accommodate
`visual or hearing impairments, and indicate how the PTAB may
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five (5) business days before the hearing
`date.
`
`G. Legal Experience and Advancement Program
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. Either party may request that
`a qualifying LEAP practitioner participate in the program and conduct at
`least a portion of the party’s oral argument. In these proceedings, the Board
`may grant additional argument time to that party. A party should submit a
`request, no later than at least five (5) business days before the oral hearing,
`by email to the Board at PTABHearings@uspto.gov. Additional
`information and a combined LEAP Practitioner Request for Oral Hearing
`Participation and Verification Form is available on the LEAP website,
`www.uspto.gov/leap.
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`7
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`
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
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`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for these proceedings shall commence
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`at 1:00 PM, Eastern Time, on October 12, 2021, by video, and proceed in the
`manner set forth herein.
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`8
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`
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01139
`(Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`IPR2020-01142
`(Patent 8,833,834 B2)
`
`PETITIONER:
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`PETITIONER:
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`PATENT OWNER:
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`PATENT OWNER:
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`9
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